Dispute over copyright in Eminem's Infinite album provides arena for analysis of the test for primary and secondary infringement

What's it about? 

This ruling by the Intellectual Property Enterprise Court (IPEC) relates to a claim for primary and secondary copyright infringement of a music album, Infinite, recorded in 1996 by Eminem (Marshall Bruce Mathers III). The IPEC had to consider the following two issues: 

• whether the claimant, FBT Productions LLC (FBT), owned the copyright in the sound recording of Infinite and therefore had the first defendant, Let Them Eat Vinyl Distribution Ltd (LTEV), committed primary copyright infringement by making vinyl copies of Infinite; and 
• whether LTEV and the second defendant (a related company of LTEV), Plastic Head Distribution Ltd (Plastic Head), had committed secondary infringement contrary to s.23 of the Copyright, Designs and Patents Act 1988 (CDPA), i.e. did Plastic Head know or have reason to believe that the vinyl copies of Infinite which it sold (as well as the CD's which it imported and sold) were infringing copies of the sound recording of Infinite? 

Why does it matter? 

On the first issue, the IPEC found that FBT was the owner of the copyright in the sound recording of Infinite and that LTEV had therefore committed primary infringement. This was despite the existence of an agreement in 1998 in which FBT (then the Bass Brothers partnership T/A "FBT Productions" (Bass Brothers)) purported to assign, to a third party, all rights in Eminem's recordings by reference to a schedule which was in fact blank. HHJ Hacon considered that the agreement merely allowed for the possibility of an assignment and instead primarily operated as a transfer of the recording services of Eminem to the third party.  It is understood that the inconsistencies in the agreement arose from possibly incomplete and incorrect amendments of precedent agreements made by lawyers.

However, on the second issue, the IPEC found that neither LTEV nor Plastic Head were liable for secondary infringement by importing, offering for sale or selling copies of Infinite. 

Now what? 

The IPEC's ruling provides a digestible assessment of the test for secondary infringement and what might affect a potential infringer's "knowledge or reason to believe" that an article is an infringing copy under s.23 CDPA. The IPEC found that the defendants' marketing and sales of Infinite were consistent with that of a company that considered itself to be trading legitimately, rather than dealing in unlicensed "bootleg" albums. The IPEC also placed weight on the defendants' "rapid and appropriate response" to FBT's complaint, indicative of a company that honestly believed it was selling licensed albums – i.e. sales of the articles were promptly withdrawn. 

A factor in this decision was that the defendants had also approached the Mechanical Copyright Protection Society (MCPS) for a licence. Whilst the MCPS stated that they could not grant a licence, they also rather paradoxically (and without reason) approved the manufacture of 2,931 vinyl copies for a royalty of 8.5%. The IPEC considered the defendants' approach to the MCPS, combined with its subsequent approval to manufacture (albeit on a limited basis), were demonstrable actions of a company acting legitimately to obtain the necessary rights without knowledge or reason to believe that its articles were infringing.

As well as the ineffective assignment in 1998, the ruling also unearthed another legal drafting error in a 1995 agreement between FBT (then Bass Brothers) and Eminem in which the agreement referred to "the Company" as being FBT Productions (which did not exist at the time as a company) rather than the Bass Brothers, although this was not found to have affected FBT's chain of title. 

The ruling should focus the minds of legal practitioners on the pitfalls and dangers in using precedent agreements incorrectly and without making them bespoke to the specific commercial details in mind, especially where the relevant agreement has more than one intended purpose.

FBT Productions LLC v Let Them Eat Vinyl Distribution Limited and another [2019] EWHC 829 (IPEC)